The Complainant is Orange Brand Services Limited of Bristol, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Archer & Angel, India.
The Respondent is Orange Telematics Private Limited / Naveen of Andhra Pradesh, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2011. On July 4, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On July 5, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 8, 2011, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 1, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on August 12, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is part of the France Telecom group of companies and collectively this group, and its predecessors have engaged in the business of providing a variety of goods and services under the trademark ORANGE, including but not limited to intellectual technology (“IT”) and IT related services. The Complainant’s business provides IT and IT related services, including, mobile and fixed line telecommunication services, Internet service provision, digital and Internet services, television services, technical research and design services all under the trademark ORANGE. The Complainant provides these products and services in over 220 countries around the world to over 3,700 multinational businesses.
The Complainant owns many trademarks around the world for the word mark ORANGE, and ORANGE Square Design, some of which are as follows:
United Kingdom Trademark Registrations:
ORANGE – Reg. No. 1542751A – October 31, 1994
ORANGE – Reg. No. 1542751B – October 31, 1994
ORANGE – Reg. No. 1542752 – July 23, 1993
ORANGE Square Design – Reg. No. 1559167A – October 31, 1994
ORANGE Square Design – Reg. No. 1559167B – October 31, 1994
ORANGE Square Design – Reg. No. 1559168 – January 14 1994
Community Trademark Registrations
ORANGE – Reg. No. 127837 – April 1, 1996
ORANGE Square Design – Reg. No. 127902 – April 1, 1996
International Trademark Registrations
ORANGE Square Design – Reg. No. 702506 – November 6, 1998
ORANGE – Reg. No. 711253 – October 27, 1998
Indian Trademark Registrations
ORANGE – Reg. No. 642868
ORANGE – Reg. No. 814584
ORANGE – Reg. No. 814583
ORANGE – Reg. No. 814582
ORANGE – Reg. No. 814581
ORANGE – Reg. No. 814580
ORANGE Square Design – Reg. No. 642869
ORANGE Square Design – Reg. No. 964520
ORANGE Square Design – Reg. No. 814873
ORANGE Square Design – Reg. No. 814869
ORANGE Square Design – Reg. No. 814870
ORANGE Square Design – Reg. No. 814871
The Complainant first used the Orange brand on April 28, 1994 in association with the launch of the Orange mobile phone network. Since that time, the Complainant has expanded its business around the world to a whole range of telecommunication services and products.
The Respondent registered the disputed domain name on November 25, 2010. At the time the Complaint was filed, the dispute domain name reverted to a website that provided services and products in association with telecommunications, web, Internet, VoIP, and data center services. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns the trademark ORANGE, registered as United Kingdom Registration Nos. 1542751A, 17542751B, 1542752; Community Trademark Registration Nos. 127837, 127902; and Indian Registration Nos. 642868, 814584, 814583, and 814582; and many other registrations around the world. The Respondent has registered the disputed domain name which is identical to the Complainant’s registered trademark, except for the descriptive word “telematics” which is defined as “being concerned with the long-distance transmission of computerized information.” The addition of the descriptive word “telematics” does not distinguish the disputed domain name from the Complainant’s trademark, and in fact is descriptive the wares and services for which the Complainant’s trademark is registered. Rights or Legitimate Interests
The Respondent is not publicly known by the Orange name, and the Complainant submits that the Respondent cannot have any rights or legitimate interests in the disputed domain name, because the Complainant has exclusive rights to the trademark ORANGE. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website which provides products and services which are virtually identical and are in direct competition with the Complainant. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent must have known about the Complainant’s rights in the trademark ORANGE when it registered a confusingly similar domain name, especially in view of the significant business presence in India where the Respondent resides; (ii) the Respondent did not respond to cease and desist letters sent by the Complainant; and (iii) the Respondent registered and is using a confusingly similar domain name which reverts to a website which provides identical wares and services of the Complainant’s products and services, and which is in direct competition of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark ORANGE by virtue of the many trademark registrations around the world, but for purposes of this decision the Panel particularly notes United Kingdom Registration No. 1542751A, Community Trademark Registration No. 127837 and Indian Trademark Registration No. 642868.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark ORANGE, except for the addition of the descriptive word “telematics.” The Panel notes that the word “telematics” is defined as “being concerned with the long-distance transmission of computerized information.” The word “telematics” therefore is descriptive of the products and services for the Complainant’s trademark is registered. The Panel finds that the first and dominant element of the disputed domain name is the Complainant’s trademark ORANGE, and this combined with the descriptive word “telematics” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel notes that the Respondent did not file any Response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. The Panel is therefore prepared to accept the Complainant’s contention that its ORANGE trademark and IT related services and products, including telecommunications, Internet and mobile phone services, are well-known, with a well-developed reputation in many countries.
The Panel is prepared to infer that the Respondent knew of the Complainant’s trademark and IT related telecommunication, Internet and mobile phone services and products, when the Respondent registered the disputed domain name on November 25, 2010. The Panel notes that the evidence of the Complainant’s business presence in India, where the Respondent resides, is particularly compelling.
The Panel finds no evidence that the Respondent is commonly known by the name Orange, or that it was licensed or authorized by the Complainant to use the trademark ORANGE, or has any other form of legitimate interest in the Orange name.
The Complainant has therefore satisfied the requirements under paragraph 4(b) of the Policy. C. Registered and Used in Bad Faith
The Panel, upon review of the evidence filed in the Complaint, and taking into consideration that the Respondent did not file any Response contesting the facts contained therein, finds that the Respondent registered and has used the disputed domain name in bad faith.
The Panel finds that the Respondent was likely aware of the Complainant’s trademark rights when it registered a confusingly similar domain name, and when it began operating a website in connection with that confusingly similar domain name which provides products and services in direct competition with that of the Complainant. The Panel notes that the Respondent resides in India, where the Complainant has a significant business presence. The Panel is prepared to infer that the Respondent registered a confusingly similar domain name in order to trade on the reputation of the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(c) under the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: August 26, 2011
Full & Egal Universal Law Academy